Judge: Term 'fire cider' too generic for trademark

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PITTSFIELD — A federal court judge has resolved a four-year legal battle over the use of the term "fire cider," finding the phrase to be a generic term that, by definition, cannot be trademarked.

U.S. District Court Judge Mark G. Mastroianni's ruling late last month in Springfield means that Shire City Herbals, of Pittsfield, no longer has the exclusive right to sell its vinegar-based tonics under the Fire Cider name, despite having registered the trademark with the U.S. Patent and Trademark Office in 2012.

In a 40-page ruling that capped a jury-waived trial that had concluded in July, Mastroianni found that the key issue in determining whether fire cider is generic depended on "the relevant purchasing public's understanding of the term."

"A term can be generic in one of two ways: an invented term can become generic through common usage over time, or a term can be generic ab initio meaning it was commonly used before it became associated with a specific product. Either way, a generic term cannot be a trademark," he wrote.

Despite the ruling, Shire City Herbals still is planning to sell products under the Fire Cider name.

"It doesn't stop us from using the Fire Cider name, it just allows everyone else to use it," said Attorney Christopher Hennessey of the Pittsfield law firm Cohen Kinne Valicenti Cook, who represented Shire City Herbals at trial.

"We were the first to bring this product to market," said Shire City Herbals co-owner Amy Huebner, who owns the firm with her husband, Dana St. Pierre, and her brother, Brian Huebner. Shire City Herbals sells Fire Cider-branded products in 5,000 bricks-and-mortar stores across all 50 states.

"It's our name, and it's our flagship product, and we did a lot of research before we applied for a trademark. There was a six-month period to oppose it. We used it for five years, and a small group of people came out of nowhere and we had to take it to court," she said.

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In 2018, Shire City Herbals completed a $1.4 million expansion that included the construction of its first on-site commercial kitchen, in a former warehouse on Commercial Street in Pittsfield.

"We're disappointed, but I'm happy to be moving on with my life," Amy Huebner said. "We have a lot of exciting things going on. We're directing our time and resources back to the business."

The three defendants, Mary Blue, of Providence, R.I., Nicole Telkes, of Cedar Creek, Texas, and Kathryn Langelier, of Lincolnville, Maine, who referred to themselves as the "Fire Cider 3,"all run businesses that sell herbal products. They were pleased with with the court's ruling.

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"What does this mean? [We] can sleep at night again!" they posted on the blog freefirecider.com.

On the blog, they refer to the court's decision as a "precedent-setting case" because the ruling can be referred to if a similar situation occurs when a corporation tries to trademark a generic herbal term used by another small community. The herbal community claimed that herbalists had used the term fire cider for about 40 years, and that the phrase is the intellectual property of Vermont herbalist Rosemary Gladstar, who is known as "the godmother of modern herbalism."

In 2015, Shire City Herbals had filed a $100,000 lawsuit in federal court against Blue, Telkes and Langelier, who claimed that the term fire cider was used long before the Pittsfield firm legally copyrighted the phrase for use as a dietary supplement seven years ago. In court documents, Shire City claimed that the three defendants had used the fire cider name to sell their own products through retail channels and online sites, creating confusion among consumers who make those products. Shire City began sending cease-and-desist orders to people who were using the fire cider name 18 months before filing the lawsuit.

In an interview with The Eagle four years ago, Amy Huebner had referred to the filing of the lawsuit as a "last resort," adding that the company had been trying to negotiate and work with the defendants for over 18 months before filing the complaint. Attempts to resolve the issue through mediation also failed, even though some of the charges that Shire City brought in its initial complaint were dismissed before the case went to trial.

The complaint accused the defendants of trademark infringement, disparagement, unfair trade practices and related claims, according to court documents.

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The trial took longer than expected. It began in March, but scheduling issues with the court caused additional testimony to be delayed until May. Final arguments in the trial weren't heard until July, and it took almost three more months before Mastroianni issued his ruling.

St. Pierre based Shire City Herbals' original tonic recipe on homemade concoctions that were made by his grandmother, who came from Germany. The company's three owners began making their tonics in a church basement in Pittsfield eight years ago. During the trial, Shire City Herbals' three owners all testified that, at the time the company applied for the registration, they were unaware that anyone had rights to the term fire cider or were aware that anyone else was using it.

In an interview with The Eagle this spring, Gladstar said she first used the term in 1981, in a home study course she taught at an herbal studies school in California, and a book she wrote in the 1990s that used the term fire cider was copyrighted. An expert witness testified at the trial that the term fire cider had been used in the media as far back as 1997, and that 12 of the 35 instances of the term he found that had been used in newspapers occurred before Shire City Herbals began selling Fire Cider products.

Gladstar, who testified during the trial, could not be reached for comment. But Gladstar left a voicemail message on an Eagle reporter's phone in which she said she hoped the court's ruling will be seen as a "win for everybody."

Shire City Herbals "should still be able to sell Fire Cider, which is great," she said.

Tony Dobrowolski can be reached at tdobrowolski@berkshireeagle.com or 413-496-6224.

Shire City Herbals, of Pittsfield registered a trademark for fire cider with the U.S. Patent and Trademark Office in 2012. The original version of this story was incorrect.


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